Notice to readers: Nothing withing this advice should be treated as legal. Not all inventions should be process this way. YOu will need to use your own judgement for using this advice for your particular invention. For more accurate information please consult with your patent agent or patent attorney.
This advice is the best suited for those who are planning to sell your invention or license it to others and not intended for manufacturing companies.
Step #1: Preliminary Invention Evaluation
The first step is to make an objective assessment of your invention. Right from the very beginning you should keep accurate records of your developing efforts. There are two type of research you should do during this step:
Market research
Preliminary patent research.
The result of this reserach is to obtain an objective “marketability test” to decide if you need to proceed to Step #2.
1. Market Research
Market research consist of searching for similar or identical products that are currently on the market or have been previously marketed. You may conduct your market research in the following places:
catalogs
the Internet
stores
magazines.
You may also research companies overseas that make products similar to your invention to determine if they manufacture products that would directly compete with your invention or if they have a better product than your invention.
2. Preliminary Patent Research
Patent research comprises searching for patents that are issued for inventions similar to yours. You can search for issued patents on the Internet or at your local U.S. Patent Depository.
There are several free search engines on the Internet, but we suggest utilizing the IBM Patent Server at www.patents.ibm.com. You should enter various keywords for your invention and print out all relevant patents. Another place to search for relevant patents is your local U.S. Patent Depository that has very helpful patent librarians to assist you in your patent search. The USPTO has a complete list of Patent Depositories at www.uspto.gov that you can utilize.
3. Preliminary Marketability Test
If a very similar product is not located during the market and patent research, you may want to take an objective marketability test for your invention. Be careful of unscrupulous invention promotion companies by visiting the National Inventor Fraud Center, Inc. web site at www.inventorfraud.com.
After you have finished conducting your market research, patent research and marketability tests, you have to make a choice:
proceed to Step #2
stop proceeding with the invention, or
place the invention on “reserve” while you consider other inventions.
Step #2: Patentability Search & Opinion
If your invention survives Step #1, you may want to have a professional patentability search conducted at the United States Patent & Trademark Office (USPTO). Make sure that the patentability search is conducted by an independent professional patent searcher at the USPTO. You should also have your Patent Attorney provide you a patentability opinion based upon the patent search results.
After you receive the patentability opinion and search results from your patent agent, you then should make a choice:
proceed to Step #3
stop proceeding with the invention, or
place the invention on “reserve” while you consider other inventions.
Step #3: Provisional Patent Application
If your invention survives Step #2, the next step is to draft your own “provisional” patent application. The provisional patent application is not a complete patent application since it only lasts for one-year and it is not examined by the USPTO. However, the provisional patent application provides a suitable format for inventors to draft their own patent application and receive up to one-year of “patent pending” while they determine if their invention is potentially licensable.
When drafting your provisional patent application, make sure to describe your invention in significant detail regarding structure, functionality and use. Make sure to include many detailed hand sketches and drawings to clearly describe the components and operation of the invention.
As of March 1, 2000, 35 U.S.C. §112, first paragraph states that the provisional patent application “shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.” Failure to satisfy 35 U.S.C. §112, first paragraph in conjunction with disclosure of your invention to another will result in lost patent rights. You should consult with a Patent Attorney if you have any questions about the legal requirements of a provisional patent application.
Step #4: Licensing Research
After filing your self-drafted provisional patent application with the USPTO, you may then begin your “licensing” research. It is recommended that you hire a professional “licensing agent” who specializes with your type of product (toy licensing agents, etc.). If you are unable to locate a licensing agent who specializes with your type of product, you may either utilize a general licensing agent or attempt to conduct the research yourself.
During the licensing research you should first make a list of companies that manufacture products similar to your invention and that may be potentially interested in licensing or buying your patent rights. You may then try to contact these companies by telephone or mail. Without describing or disclosing your invention, you may want to tell the company that you have an invention that solves a specific problem or does a special function. You may want to inform them that you have “patent pending” on this unique product. You may also want to have a Confidentiality Agreement signed by the company before discussing anything with them in case you accidentally disclose portions of your invention.
You may want to ask the company if they would potentially be “interested” in licensing or purchasing the patent rights to an invention. If they request more information about your invention this is an indication that your invention is potentially licensable. If the companies state that they already have a product that adequately solves the problem or that does the special function, this is an indication that your invention is not potentially licensable.
After you have contacted the companies and have received feedback from the companies, your licensing agent should make an objective assessment and recommendation as to the potential of licensing or selling your invention. You then have to make a choice: (i) proceed to Step #5, (ii) stop proceeding with the invention, or (iii) place the invention on “reserve” while you consider other inventions.
Step #5: Hire a Patent Attorney to Draft a Patent Application
If you feel that your invention is potentially licensable after conducting your licensing research in Step #4, you may want to hire a Registered Patent Attorney to draft a complete patent application for your invention. Neustel Law Offices, LTD provides patent application drafting services for inventors and businesses. You can contact Neustel Law Offices, LTD for more information at 701-281-8822 or visit our web site at www.patent-ideas.com.
Step #6: License or Sell the Patent Rights
After your Patent Attorney drafts and files the formal patent application for your invention, you may then have your licensing expert arrange to disclose your invention to potential licensees. You may attempt to have Confidentiality Agreements signed with these companies prior to disclosing your invention to them. Do not be surprised if many larger companies will not sign your Confidentiality Agreement.
Step #7: Final Review
You should “reevaluate” your position with regards to your invention every six-months while completing Step #6. As an inventor, you need to objectively determine when you should terminate all actions in promoting a specific invention. You should base your decision upon the reactions you receive from the companies when presented with a full disclosure of your invention. Remember, your time is worth money so do not spend it attempting to market an invention that no one wants.
Approximately every six-months you should consider either (1) manufacturing the invention, or (2) terminating all efforts for the invention. If you have not received a positive reaction from industry regarding your invention, you may want to consider the latter choice to avoid creating further hardship for yourself. Do not spend valuable time pursuing a fruitless dream.